Goodwin Procter’s Patent Opinions & Counseling Practice is devoted to providing a solid legal basis upon which clients can make sound business decisions. We help both domestic and international companies determine their offensive and defensive patent rights as well as those of their competitors. We routinely advise on issues of patent infringement, invalidity, unenforceability, freedom to operate and licensing with respect to patents owned by others, and provide formal opinions on these matters. In addition, in conjunction with our Patent Litigation Practice, we help defend against infringement claims.

Many of the attorneys in our practice have extensive patent prosecution and litigation experience, allowing them to make real world assessments regarding the strengths and weaknesses of patents owned by others. Our attorneys are also experienced in working with clients’ in-house attorneys and technical personnel as well as outside technical consultants to ensure that all relevant information is considered before an opinion is rendered.

Goodwin Procter has over 150 attorneys and scientists dedicated to protecting IP assets.  With superior technical abilities and extensive experience in a wide variety of scientific disciplines, our professionals have over 50 advanced degrees, including 20 Ph.D.s, in fields such as chemistry, biology, mathematics, electrical engineering, medicine and ethics. Many were formerly employed as scientists, engineers or in-house counsel by organizations such as ABB Combustion Engineering, AGFA, Colgate-Palmolive, ExxonMobil, Fidelity Investments, General Dynamics, General Electric, Haagen-Dazs, Harvard Medical School, Harvard University, Hoffman-LaRoche, IBM, MIT, M&M/Mars (now Masterfoods USA), Martin Marietta, Parke-Davis (now Pfizer), Pepsico, Raytheon, Schering-Plough, Siemens, Sperry (now Unisys), Standard Microsystems, Texaco (now ChevronTexaco), ThinkFire and the U.S. Navy.

Some of our attorneys are also former patent examiners in the U.S. Patent & Trademark Office, and over 60 are registered to practice before the PTO.

With a primary focus on technologies involving electronics, computer hardware and software, biotechnology, chemicals, pharmaceuticals, lasers and telecommunications, our patent attorneys work diligently to:

• Limit exposure to charges of infringement by performing clearance searches, and rendering infringement, validity, enforceability and patentability opinions
• Counsel at all stages of product development and life cycle, advising on whether to enter new product markets, invest in businesses and forge new business alliances
• Advise on strategies to minimize the legal and business risks inherent in marketing new products
• Counsel on how to protect and maximize patent rights and whether to assert those patent rights against competitors

The breadth of our experience combined with in-depth scientific training and industry focus allows us to formulate decisive strategies for clients in matters involving a range of sophisticated technologies.

Contacts: Steven J. Frank and Marta E. Gross